LEGO Juris A/S v Nanda Rizki

WIPO Case No. D2022-4491

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION
LEGO Juris A/S v. Nanda Rizki

Case No. D2022-4491

1. The Parties

The Complainant is LEGO Juris A/S, Denmark, represented by CSC Digital Brand Services Group AB,

Sweden.

The Respondent is Nanda Rizki, Indonesia.

2. The Domain Name and Registrar

The disputed domain name <slotlego.live> (the “Disputed Domain Name”) is registered with NameCheap,

Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 24, 2022. On November 24, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 24, 2022, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent (Withheld for Privacy ehf) and contact information in the Complaint. The Center sent an email communication to the Complainant on November 25, 2022 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 29, 2022.

The Center verified that the Complaint together with the amended Complaint satisfied the formal
requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for
Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for
Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 1, 2022. In accordance with the Rules, paragraph 5, the due date for Response was December 20, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 23, 2022.

The Center appointed Mariya Koval as the sole panelist in this matter on January 3, 2023.

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The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and
Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the

Rules, paragraph 7.

4. Factual Background

The Complainant is a part of the Lego Group, which was founded in 1932. The Complainant is one of the world leaders of toy manufacturers, namely it manufactures the toys, consisting mostly of interlocking plastic bricks. The Complainant has subsidiaries and branches throughout the world, its LEGO products are sold in more than 130 countries, including Indonesia. The Lego Group has also built several amusement parks around the world, each known as the Legoland Resorts, and operates numerous retail stores.

The Complainant has provided evidence that previous UDRP panels have determined the LEGO trademark (the “LEGO Trademark”) as being well-known or famous. See LEGO Juris A/S v. Level 5 Corp, WIPO Case No. D2008-1692: “The Panel finds that the Complainant has established that LEGO and LEGOLAND are

well-recognized and world famous trademarks and that the trademarks are distinctive”; LEGO Juris A/S v.

that the Complainant has established that LEGO is a well-known trademark and that the trademark is distinctive and famous”.

The Complainant and its LEGO Trademark are also rated by numerous International rankings: for example, for 10 consecutive years. In 2014, TIME also announced LEGO to be the Most Influential Toy of All Time.

according to the official Top 10 Consumer Superbrands for 2019, provided by Superbrands UK, the LEGO
Trademark is number 1 Consumer Superbrand and number 8 in the Consumer Relevancy Index. The
Reputation Institute recognized the Lego Group as number 1 on its list of the world’s Top 10 Most Reputable

The Complainant is the owner of numerous LEGO Trademark registrations around the world, among which are:

- European Union Trade Mark Registration No. 000039800, registered on October 5, 1998, in respect of
goods and services in classes 3, 9, 14, 16, 20, 24, 25, 28, 38, 41, 42;

- United States of America Trademark Registration No. 1018875, registered on August 26,1975, in
respect of goods in class 28;

- Indonesian Trademark Registration No. IDM000352087, registered on April 2, 2012, in respect of
goods in class 25;

- International Registration No. 869258, registered on November 11, 2005, in respect of goods and
services in classes 9, 16, 25, 28, and 41.

The Complainant has also a significant online presence, operating the main domain name <lego.com>, and is the owner of close to 5,000 domain names containing the term “lego” (Annex 5 to the Complaint).

The Disputed Domain Name was registered on October 11, 2022. According to the evidence submitted with the Complaint, the Disputed Domain Name resolves to a commercial website in the Indonesian language offering gambling services.

5. Parties’ Contentions

A. Complainant

The Complainant contends that its LEGO Trademark is among the well-known trademarks in the world, due

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in part to decades of extensive advertising, which prominently depicts the LEGO Trademark on all products, packaging, displays, advertising, and promotional materials. Moreover, the LEGO Trademark is a brand No. 1 in many rankings (Annex 6.1, Annex 6.2, and Annex 6.3 to the Complaint).

The Complainant also contends that the Disputed Domain Name is confusingly similar to the Complainant’s LEGO Trademark in view of the dominant part of the Disputed Domain Name comprising the term LEGO, identical to the LEGO Trademark registered by the Complainant not only as trademarks but also as domain names in numerous countries all over the world. At the same time, the Complainant contends that despite the Disputed Domain Name being a combination of its LEGO Trademark and the prefix “slot”, it does not diminish the confusing similarity between the Disputed Domain Name and the Complainant’s Trademark. Anyone who sees the Disputed Domain Name is bound to mistake it for a name related to the Complainant with reference to the reputation of the LEGO Trademark. There is a considerable risk that the trade public will perceive the Disputed Domain Name either as a domain name owned by the Complainant or that there is some kind of commercial relation with the Complainant. By using the Complainant’s LEGO Trademark as a dominant part of the Disputed Domain Name, the Respondent exploits the goodwill and the image of the Trademark, which may result in dilution and other damage for the Complainant’s LEGO Trademark.

The Complainant further asserts that the Respondent has no rights or legitimate interests in respect of the

Disputed Domain Name in view of the following:

-	the Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the Disputed Domain Name;
-	no license or authorization of any other kind, has been given by the Complainant to the Respondent, to use its LEGO Trademark;
-	as no evidence has been found that the Respondent is using the name LEGO as a company name or has any other legal rights in the name, it is quite clear that the Respondent is simply trying to benefit from the Complainant’s world-famous Trademark.
-	the Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services. Instead, the Respondent has intentionally chosen the Disputed Domain Name based on a registered Trademark in order to generate traffic and income through a commercial
website offering gambling services, not related to the Complainant in any way.

The Complainant also alleges that the LEGO Trademark in respect of toys belonging to the Complainant has the status of a well-known and reputable Trademark with a substantial and widespread goodwill throughout the world. The awareness of the LEGO Trademark is considered, in the Community in general, to be significant and substantial. The number of third party domain name registrations comprising the LEGO Trademark in combination with other words has always been attractive to domain name infringers.

The Complainant further contends that the Respondent registered and is using the Disputed Domain Name in bad faith since the Respondent registered the Disputed Domain Name on October 11, 2022, that is subsequent to when the Complainant registered the LEGO Trademark in Indonesia where the Respondent allegedly resides, and elsewhere, by decades. The Complainant notices that it is quite obvious that it is the fame of the LEGO Trademark that has motivated the Respondent to register the Disputed Domain Name. That is, the Respondent cannot claim to have been using the LEGO Trademark, without being aware of the Complainant’s rights to it.

The Disputed Domain Name is connected to a commercial website offering gambling services, not related to the Complainant in any way. Nevertheless, no disclaimer is found on the website. Thereby, it is quite clear that the Respondent has chosen the LEGO Trademark, which is world famous for its toys, to attract visitors to its gambling website. Consequently, the Respondent is using the Disputed Domain Name to intentionally attempt to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complainant’s LEGO Trademark as to the source, sponsorship, affiliation or endorsement of its website.

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B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, a complainant to succeed must satisfy the panel that:

(i)        the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights;

(ii)       the respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii)      the disputed domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has properly asserted its rights in the LEGO Trademark due to the long use and number of registrations globally, including in Indonesia.

The Disputed Domain Name reproduces the LEGO Trademark in its entirety in combination with the dictionary word “slot” and the generic Top-Level Domain (“gTLD”) “.live”. According to section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), in cases where a domain name incorporates the entirety of a trademark, the domain name will normally be considered identical or confusingly similar to that mark for purposes of UDRP standing. Also in accordance with the WIPO Overview 3.0, section 1.8, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.

The Panel finds that in view of the fact that in this case the Disputed Domain Name incorporates the entirety of the Complainant’s well-known LEGO Trademark, the addition of the word “slot” does not in any case prevent a finding of confusing similarity between the Disputed Domain Name and the Complainant’s Trademark.

It is also well established that the gTLD, in this case “.live”, is viewed as a standard registration requirement and as such is disregarded under the first element confusingly similarity test. See, WIPO Overview 3.0, section 1.11.1.

In light of the above, the Panel finds that the Disputed Domain Name is confusingly similar to the

Complainant’s LEGO Trademark. Therefore paragraph 4(a)(i) of the Policy has been satisfied.

B. Rights or Legitimate Interests

The Complainant has used its LEGO Trademark for more than 80 years, which is long before the known throughout the world.

The Panel considers that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. There is no evidence that the Respondent appears to own any LEGO Trademark, nor is the Respondent commonly known by the Disputed Domain Name. Furthermore, the Panel concludes that in view of the global fame of the LEGO Trademark it is highly unlikely that anybody could legitimately adopt the Disputed Domain Name for commercial use other than for an intent to create confusion with the Complainant.

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Also, taking into consideration the reputation of the Complainant’s LEGO Trademark, it is impossible to assume that the Respondent was unaware of the Complainant’s brand and business at the time of registration of the Disputed Domain Name.

The Panel also finds that no license or authorization of any other kind has been given by the Complainant to the Respondent to use the LEGO Trademark. Moreover, the website under the Disputed Domain Name resolves to the commercial website in the Indonesian language where the gambling services are offered, that gives no grounds for considering the use of the Disputed Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.

Furthermore, in this case, the Respondent, having a chance to invoke any circumstances for demonstration
of his rights or legitimate interests in the Disputed Domain Name, did not submit any response to the
Complaint and consequently did not rebut the Complainant’s prima facie case.

In view of the foregoing, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and that the Complainant succeeds under the second element of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Taking into consideration that the LEGO Trademark has been in use more than 80 years and that the
Complainant has spent huge amounts and efforts for promotion of its Trademark, which is undoubtedly
globally known, the Panel considers it is clear that the Respondent was well aware of the Complainant and
its LEGO Trademark at the time of registration of the Disputed Domain Name. Moreover, the Disputed
Domain Name, incorporating the Complainant’s LEGO Trademark in its entirety, is clearly deceptive for the
Internet users with respect to the person producing the goods: entering the website under the Disputed
Domain Name the Internet users will most likely believe that they are entering the website related to the
Complainant’s business.

The Panel therefore finds that, taking into consideration that the Complainant’s well-known LEGO Trademark is incorporated in the Disputed Domain Name in its entirety, the Respondent has obviously registered and has used the Disputed Domain Name for the only purpose of attracting the Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.

Further, taking into consideration that the Complainant’s well-known LEGO Trademark is incorporated in the faith is established where the Complainant’s trademark has been well-known or in wide use at the time of registering a domain name, see, e.g., CHANEL, INC. v. ESTCO TECHNOLOGY GROUP, WIPO Case No. D2000-0413.

Disputed Domain Name in its entirety and that the Respondent is trying to divert the consumers of the
Complainant’s products to its website for commercial gain, the Panel finds that the Respondent has
registered and is using the Disputed Domain Name in bad faith. Addition of the word “slot” to the LEGO
Trademark does not change an impression of strong association of the Disputed Domain Name with the

According to section 3.1.4 of the WIPO Overview 3.0, UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an

unaffiliated entity can by itself create a presumption of bad faith. The Panel is of opinion that it is clear that
the Respondent, having registered and used the Disputed Domain Name, which is confusingly similar to the
well-known Complainant’s Trademark, primarily intended to disrupt the Complainant’s business. In view of
the absence of any evidence to the contrary and that the Respondent did not file any statement, the Panel

concludes that the Respondent has registered and is using the Disputed Domain Name in bad faith.

In view of the foregoing, the Panel finds that the paragraph 4(a)(iii) of the Policy has been satisfied by the

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Complainant and accordingly, the Disputed Domain Name has been registered and is being used in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name, <slotlego.live>, be transferred to the Complainant.

/Mariya Koval/ Mariya Koval Sole Panelist Date: January 17, 2023